FIXING, AT LEAST SOME OF, A PATENT OWNER’S MISTAKES – SUPPLEMENTAL EXAMINATION
First time Inventors are usually surprised by the obligations that the United States Patent and Trademark Office imposes on an inventor to get a U.S. patent.
Failure to comply with these obligations can result in invalidation of a U.S. patent.
One of these obligations is a duty of disclosure.
The duty of disclosure has various aspects to it, however, the following is an example of one aspect, and the potential consequences of violating that duty.
Inventor Bob is aware of a another person’s product that has been publicly on sale in the United States ten years prior to Bob coming up with his invention.
Inventor Bob learned of the other person’s product (and the fact that it had been publicly on sale for ten years prior), after inventor Bob independently came up with his invention, but before Bob filed for a U.S. patent.
Bob prepares his own patent application, without a patent attorney, and some, but not all, of Bob’s claims read on the other person’s product.
Bob mistakenly, and unintentionally, fails to disclose the other person’s product to the United States Patent Office.
The US Patent Office issues Bob a patent. Bob subsequently sues Big Company for infringement.
Big Company finds out Bob failed to disclose the prior on sale product.
Bob’s entire patent is invalidated.
Could Bob have corrected this problem and saved at least part of his patent?
Through “Supplemental Examination” which became effective September 16, 2012, under the recently passed America Invents Act, the answer may be yes.
In theory, “Supplemental Examination” could have allowed Bob to disclose the publicly on sale product, after Bob’s patent issued but before the infringement lawsuit against Big Company, and to potentially eliminate what is called an “inequitable conduct” defense.
This may allow Bob to cancel claims which read on the other person’s publicly on sale product, but to retain claims which did not read on the other person’s product, and to thereby save at least part of Bob’s patent.
However, “Supplemental Examination” has many requirements. An inventor should consult with a patent attorney, such as Walter J. Tencza Jr., Esq., PATENTNOW.COM® to determine if it is appropriate, in a particular case.
